Yesterday, District of Delaware Judge Sue L. Robinson declined jurisdiction over a discovery dispute involving a party’s instruction not to answer. At a deposition, the plaintiff’s attorney directed the nonparty deponent — who was involved in prosecuting the underlying patent — to refrain from answering certain questions on work-product grounds.
The Court found that any order on the subject would have to originate from the court where the deposition occurred:
[A]lthough the nonparty deposition was taken outside this jurisdiction, the nonparty witness was represented by plaintiff’s counsel, and it was plaintiff’s counsel who instructed the witness not to answer certain questions based on work product. Nevertheless, the protection belongs to the attorney witness, not to the client . . . . Therefore, I conclude that, in this case, an order compelling the nonparty witness to answer is directed to the nonparty, not to plaintiff.
Despite declining jurisdiction, the Court in dicta cautioned that work-product immunity for prosecution activities must proceed on a case-by-case basis: “patent prosecution activities are subject neither to a blanket immunity nor automatic disclosure.”